This article has been written by Manya Chhabra, pursuing the Diploma in Intellectual Property Rights, Media and Entertainment Laws from LawSikho.

Introduction

The title of a film, usually the first piece of information about the film released to the public, is imperative to how the work will be perceived and received by the target audience. Thus, it is not entirely incorrect to say that the title of a movie is one of the most important features that decide the success or failure of a film. Hence, a considerable amount of creativity and work is usually involved in deciding movie titles. Naturally,  the protection of movie titles has become a subject-matter of heated disputes in the film and entertainment industry worldwide. 

Currently, the Indian copyright regime does not offer any adequate protection to the titles of cinematographic films. Therefore, a majority of filmmakers turn to film associations such as The Indian Motion Picture Producers’ Association (IMPPA), Association of Motion Pictures and Television Programme Producers (AMPTPP) and Film and Television Producers’ Guild of India for registering their plots and movie titles. However, this alone does not serve to deter others from using the title of a film so registered, as such registration has no effect in legal proceedings i.e. no legal recourse is available by virtue of such registration. 

This article attempts to explore how movie titles in India are currently protected under intellectual property rights, with special emphasis on the law of copyrights and trademarks. 

Film titles under the Copyright Act, 1957

The laws relating to copyrights seek to protect the expressions of ideas. Section 2(o) of the Act defines a “literary work” as including “computer programmes, tables and compilations including computer databases.” Further, Section 13 of the Copyright Act, 1957 makes it clear that a copyright shall only subsist in a substantial work. Given these definitions, it is clear that movie titles do not satisfy the criteria of substantiality and are too short to fall within the ambit of works that are eligible for copyright protection. 

This has been strengthened by the pronouncement of the Supreme Court of India in the decision of Krishika Lulla v. Shyam Vithalrao Devkutta, wherein the apex court stated that the titles of literary works, including those of movies, shall not be copyrighted, and that they can only seek protection under trademark laws. 

Even courts in the United States have held consistently that the titles of literary and artistic works alone cannot be protected under copyright laws.

Case law- no copyright protection of film title

The aforementioned principles were recently in limelight in a case before the High Court of Madras, M/s Lyca Productions v. J. Manimaran. In an appeal from the decision of the single bench, the plaintiff herein (Manimaran) claimed that he had created a work to which he gave the title “Karu” and the same had been registered with the Film and Television Producers Guild of South India in the year 2011. He alleged that the defendant (Lyca Productions) subsequently produced a work entitled “Lyca’s Karu” and had registered this title with Tamil Film Producer Council in 2017. The plaintiff contended that it was standard practice for filmmakers to register the titles of their films with such film associations and since the plaintiff had registered his title much before the defendant, the defendant should be provided injunction against the use of similar title. The single judge had ruled in the plaintiff’s favour. 

In the appeal filed from the judgement, the double bench made a reference to Sections 13 and 16 of the Copyright Act and held that the act only grants protection to a creative work and not its title. A reference was made to Krishika Lulla, wherein a similar ruling had been made. The division bench also clarified that registration of titles with film associations is not recognized by copyright societies and hence cannot bind third parties by preventing them from using titles so registered. Since the film guilds are not registered bodies under the Copyright Act, 1957 they cannot administer any rights in cinematographic films. 

Copyright protection being out of question, let us explore whether, and to what extent, movie titles can be protected under trademark law. 

Trademark registration of film titles

In India, it is possible for filmmakers to register the titles of their works under trademark law. The Delhi High Court has clarified in a case (discussed in further detail in subsequent sections) ruled that the titles of cinematographic works cannot be used in manner which creates a likelihood of confusion in the minds of the public. Movie titles can be registered under Schedule 4 Class 41 of the Trademark Act, 1999. 

Trademark protection can be sought for titles of two main categories of works: a single work and a series. In the latter category, i.e. series, titles serve as an indication that each part of the series comes from the same source, and can therefore be registered as a trademark. The titles of series enjoy the same trademark protection as other commercial trademarks.

When it comes to titles of a single work, in order to be eligible for trademark protection, it must be shown that the title has acquired a secondary meaning. This is so because the likelihood of confusion with respect to the source, affiliation, sponsorship or connection would only arise in the minds of the public in case the title of the work has acquired a secondary meaning, and that the public associates the work with the title sought to be protected.

Factors Determining Secondary Meaning: Secondary meaning can be determined from factors such as continuity and longevity of use; the extent of promotion and advertising, and money spent in such promotion, etc. Even if the movie is yet to be released, in case a significant amount of pre-release publicity and promotion activities have been undertaken by the filmmakers, the title may require sufficient recognition to come under the ambit of trademark protection. 

It was clarified in the case of Kanungo Media (P) Ltd. v. RGV Film Factory that a series of titles, as opposed to a single title, are more easily registered as trademarks as they all come from the same origin or source and hence they are already recognized and distinguished in the eyes of the public. Thus, the burden of proving ownership and commercial use is relatively easy as compared to single titles. Some common examples of movies which are a part of series-titles include the Dhoom trilogy, and Golmaal I, II, III, etc. 

Trademark protection of titles of cinematographic films shall now be explored through some judicial decisions on the matter. 

Famous controversies regarding the protection of movie titles

Biswaroop Roy Choudhary v. Karan Johar

This is a very famous case in which the plaintiff (Choudhary) had already registered the title “Kabhi Alvida Naa Kehna” under Class 41 of the Trademarks Act. The defendant (Johar) produced a film with the same title, and registered the title with the Association of Motion Pictures and TV Program Producers and the Film and Television Producers Guild of India. 

The Delhi High Court held that although the plaintiff had registered his title with the Trademarks Registry, the defendant was the actual owner of the title. It was stated by the court that at a time when the film was ready for release, a change of title at the last minute was not commercially viable for the defendant. The court emphasized that actual use of the trademark is a relevant factor in deciding disputes of such a nature. The court lastly highlighted that the titles of a single movie can only be registered once it has acquired a secondary meaning. 

Kanungo Media Pvt Ltd v. RGV Film Factory

In this case, the plaintiff (Kanungo) produced a Bengali movie and titled it “Nisshabd” however, the same could never be released due to commercial reasons. Subsequently, the defendant (RGV) produced a film with the same title. Thereupon, the plaintiff filed a suit of infringement against the defendant. In its decision, the court stated that for a trademark to be protected, it must have acquired a distinctive character. Oftentimes, movie titles consist of generic words and terms used in everyday language and in the absence of a distinctive character, such titles cannot be protected under trademark laws. Based on the fact that the plaintiff’s film lacked distinctive character and secondary meaning, the court held in favour of the plaintiff. 

Warner Bros Entertainment Inc. & Anr. v. Harinder Kohli & Ors.

In another very famous case, the plaintiffs (W.B.) were the registered owners of the trademark “Harry Potter” and they brought a suit of infringement, seeking permanent injunction, against the defendants for a movie released by them by the title of “Hari Puttar”- which had been registered with the Indian Motion Picture Producers’ Association. The court dismissed the suit of the plaintiffs on the ground that the films of the plaintiffs catered to the entertainment needs of a very exclusive audience, who would be able to make a clear distinction between the Harry Potter films and the Hari Puttar comedy. Since, there was no likelihood of confusion, the court did not hold in favour of the plaintiff. 

There are many other similar cases, and what can be established from a study of the above discussed and other cases is that merely registering a movie title with film associations and guilds is not sufficient to prevent use of the title. Even though registration with such guilds may be useful, only a valid registration with the Trademarks Registry will afford legal protection to the title. Furthermore, in fulfilment of criteria of distinctive character, simply registering a trademark with the Registry is not sufficient and the claimant must be able to establish that the movie title has been in use and has through such use acquired a distinctive character in the eyes of the public. 

Conclusion

Given the importance that the title of a film assumes in how the work is perceived and understood by the public, filmmakers are recognizing the value of protecting the work as well as its title. As has been discussed, copyright laws offer no respite to authors and creators seeking to protect titles of their works, and they must register titles under trademark laws. To establish ownership and identity, the titles of movies must be registered with the Trademarks Registry in India. 

Registration of the title shall help to grant exclusive rights to the filmmakers to use and exploit the title, and will restrain infringement or unauthorized use of the title. We have already seen that even though it is usual practice for filmmakers to register titles with associations and guilds, case law has clearly established that such a registration has no holding in the eyes of the law and titles shall have to be legally registered under the Registry. 

References

1.  Lucy Rana & Pooja Thakur, India: Film Titles And Their Protection, Mondaq, https://www.mondaq.com/india/trademark/455412/film-titles-and-their-protection
2.  Tim Craddock, Movie Titles: What’s Protectable, What Isn’t, and How the MPAA Addresses the Issue, Klemchuk LLP, https://www.klemchuk.com/ip-law-trends/trademark-copyright-mpaa-when-can-you-protect-movies-titles.
3.  Shradha Deb, Movie title: protection under law of trademark, Singh & Associates, https://s3.amazonaws.com/documents.lexology.com/c95efc44-07b6-4377-aaee-47ea2f080ada.pdf?AWSAccessKeyId=AKIAVYILUYJ754JTDY6T&Expires=1614583878&Signature=O7qXJcz6lMT1sZIjDjKndGzYwCU%3D. 
4. Whose Name is it Anyway?: Intellectual property in titles of books and avenues for protection, Obhan & Associates, https://www.obhanandassociates.com/blog/whose-name-is-it-anyway-intellectual-property-in-titles-of-books-and-avenues-for-protection/.
5. Krishika Lulla v. Shyam Vithalrao Devkutta, (2016) 2 SCC 521
6. M/s Lyca Productions v. J. Manimaran O.S.A. No. 63 of 2018
7. Biswaroop Roy Choudhary v. Karan Johar IA No. 3144 of 2006 in CS (OS) No. 467 of 2006.
8. Kanungo Media Pvt Ltd v. RGV Film Factory 138 (2007) DLT 312
9. Warner Bros Entertainment Inc. & Anr. v. Harinder Kohli & Ors. 2008(38)PTC185(Del).

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